Trademark Opposition & Cancellation Guide - Trademark Best Practices For In-house Counsel & Brand Owners

As a Connecticut trademark attorney, I often advise clients on the trademark registration process and what legal rights a United States Trademark registration grants.  Since there are many misunderstandings about trademark law, it is worthwhile to briefly discuss some best practices on how to protect trademarks and brand names here:

1.   Begin with a Full Trademark Search

A trademark search generally consists of a search of the United States Patent and Trademark Office records, state trademark office records, and common law listings to determine the availability for registration and use of a proposed trademark in interstate commerce.  The trademark search looks for identical trademarks as well as trademarks that may be "confusingly similar" to the trademark that is being considered for adoption by the searching party. 

2.   Have a Trademark Lawyer Provide a Written Legal Opinion

Analyzing the results of a trademark search requires experience and a detailed knowledge of applicable trademark law.  After the full trademark search is conducted, a qualified trademark lawyer should provide a written opinion as to the availability for registration and use of the trademark on the proposed goods and services.  The opinion should list all of the trademark search results of interest that are relevant to a determination of clearing the desired trademark for registration and use. 

3.  Prepare and File a Trademark Application

Once the trademark lawyer provides a favorable trademark search opinion, he or she should promptly prepare and file a trademark application with the U.S. Patent and Trademark Office.  Trademark applications can either be filed based on (a) existing use in commerce or (b) an intent to use in commerce if the applicant has not yet commenced use of the trademark on its products or services.  Once the trademark application is filed, it is assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements, and to deterimine whether the application will be either accepted or initially refused due to a likelihood of confusion with previously registered trademarks or for other reasons.

By following the above approach to trademark clearance and protection, companies can avoid many of the major risks and pitfalls associated with this nuanced area of trademark law.

Candace Nelson, a judge on the Food Network's successful show, Cupcake Wars, is in her own battle after suing a Fairfield, Connecticut based business for trademark infringement.  Nelson's company, Sprinkles Cupcakes, Inc., has filed a lawsuit in Connecticut District Court alleging that Pink Sprinkles LLC of Fairfield has committed trademark infringement based on Pink Sprinkles's use of the "sprinkles" moniker for cupcakes and other baked goods.  Sprinkles Cupcakes is the owner of a United States trademark registration for the trademark SPRINKLES for bakery goods and retail store services featuring bakery goods.

Simple case?  Not really. Even though the plaintiff has a federal trademark registration, there are plenty of defenses available to our Connecticut neighbor, Pink Sprinkles.  I seem to recall a famous case before the Trademark Trial and Appeal Board rendering the mark "soft and chewy" for cookies merely descriptive of baked goods and thus not eligible for registration.  There are other cases that have held no matter how much money the owner of a merely descriptive trademark pumps into the brand, or no matter how successful the brand gets, it is in the end ---well, merely descriptive.  It also appears that the Pink Sprinkles may have other defenses available to it that could level the playing field with its deep-pocketed adversary.

Let's hope that the case comes to a swift resolution that keeps Pink Sprinkles in business and profitable!

Preparing and filing a trademark application with the United States Patent and Trademark Office is not a simple task. Like most governmental agencies, the Trademark Office has many rules and regulations that must be followed in the filing process.  If a trademark owner does not carefully follow these requirements, chances are that his/her trademark application will either be rejected for being incomplete or die an administrative death further down road.  The following is what you will need to successfully prepare and file your trademark application:

• Name and address of Applicant
• State of formation (if a corporation or LLC)
• Basis for Use  (intent to use in commerce or based on use)
• description of goods or services on which the mark is to be used
• date of first use (if a use-based application)
• specimens of use (marketing or promotional materials if a use-based application)
• submission of a trademark "drawing" (either block letters or design mark)
• Signature
• Appointment of counsel to communicate with the USPTO
• Payment of governmental filing fee

The above information is the minimum of what you or your attorney will need to do and know in order to successfully register and use a trademark in commerce in association with your company's products or services.  In planning a trademark strategy, make sure that you speak with an experienced trademark attorney in your area.

Many of us learn best through the use of memory devices known as mnemonics. So in honor of all you Scrabble ® fans out there, here is a “G-R-E-A-T” way to interview and select a trademark lawyer to represent your legal interests before the Trademark Trial and Appeal Board:

 “G” is for Geography.   Since trademark law if federal in nature, is really does not matter if your lawyer’s office is in suburban Des Moines even though your company is located in New Jersey.  This is especially true since the overwhelming majority of cases before the Trademark Trial and Appeal Board are submitted on the papers – meaning that your attorney’s physical presence in the Trademark Office is never required.

“”R” is for Rent.   If your lawyer is a partner in a large firm with offices located in the top floor of an impressive building in a wonderful city, chances are you will help to pay for the luxury of remaining in that location in the form of higher hourly rates.  In fact, a recent survey by Incisive Legal Intelligence on national average hourly billing rates supports this point. 

“E” is for Experience.    When we think of experience, the best lawyers are the ones not only with subject matter knowledge, or even a history of handling the same types of cases.  In fact, these are the minimum requirements of any “good” lawyer.   What makes a great lawyer is one who is able to achieve your desired results in the least amount of time for the least amount of money while exposing you to the least amount of risk.  Sounds simple?  It isn’t.  

“A” is for Aptitude.   The Trademark Board Manual of Procedure is like a big instruction booklet that comes with your child’s toy car – with the big difference being that if your trademark lawyer doesn’t know how to successfully put together a trademark opposition or cancellation, you may find yourself losing more than just a toy.

“T” is for Timing.   To many lawyers, it’s “time” that is everything – as in billable hours.   That is why hourly fee arrangements continue to remain so popular among law firms.    In today’s business environment, what matters are results.  Therefore, always insist that your attorneys agree to a flat-fee arrangement when representing you and your company in a United States Patent and Trademark Office case.   Successful results are often the product of preparation and timing – not the number of hours expended.